Will South Africa Take Up A Regionally-Oriented And Globally-Aligned Approach To IP Law In The Future?
As was emphasized within our last article, IP law and competition law have certain overlaps, whereby Dr. Hanna Stakheyeva, Assistant Professor in business law at Bogazici University, has remarked that “IPR holders with a strong market power” might have to pay the most attention to the implications of competition law. Concluding from her findings and the latter claim, Stakheyeva argues that, based on competition law, IPR owners are faced with new obligations, that is, if they want to effectively protect their rights “in every step of their economic activity”.
However, the scope in which IPR holders can protect their knowledge, inventions and innovation, is dependent on the respective legal frameworks in place, which underpin IP protection. As Hlomani highlights in an article on Afronomics Law, South Africa is neither part of the African Regional Intellectual Property Organization (ARIPO), nor the Organisation Africaine de la Propriété Intellectuelle (OAPI), with this fact requiring an analysis of South Africa as a ‘special case’ within IP law in Africa. This article will provide an initial background of IP law in South Africa seeking to understand what makes it a special case.
South Africa, International IP And Trade Law: WTO, WIPO & TRIPS
In a nutshell, the TRIPS agreement came out of the Marrakesh Agreement, which led to the establishment of the World Trade Organization (WTO) in 1995. In its essence, the Marrakesh Agreement seeked to “create an integrated multilateral trading system encompassing the General Agreement on Tariffs and Trade (GATT) and the results of all trade rounds (including the Uruguay Round that had been conducted since the GATT was signed in 1947”. As all 123 parties, who signed the Marrakesh Agreement on 15th April 1994, agreed, they would commit their joint efforts towards such economic actions and trade, which has positive impacts on living standards, employment, real income, the demand and the production of goods and services. Making a further commitment to recognize the special need for trade to positively affect developing countries, the Marrakesh Agreement marked an attempt to lobby for mutually beneficial trade relationships and agreements based on “the substantial reduction of tariffs” and non-discrimination.
Despite that South Africa accepted the Marrakesh Agreement on 2nd December 1994, it has not yet ratified it. Neither has the country signed the Madrid Protocol. However, it ratified the Convention Establishing the World Intellectual Property Organization (WIPO) on 23rd December 1974, which is of some significance as the two organizations, that is the WIPO and the WTO have stepped up their efforts to cooperate at the least since the establishment of the 1995 WIPO-WTO Cooperation Agreement. With the history of the WIPO going back to the 1880s, whereby the Paris Convention for the Protection of Industrial Property (1883) and the Berne Convention for the Protection of Literary and Artistic Works (1886) contributed to its establishment, originally as to separate bureaus, it became what it is known for today in 1970 and, in 1974, it became a part of the UN system. Having united forces for joint technical assistance with regard to the implementation of the TRIPS agreement and possessing an observer status at the TRIPS Council (WIPO) respectively the the WIPO (WTO), the two organizations could certainly be criticized for constituting potentially ‘Western-centric’ institutions. Especially because of the joint technical assistance platform, which was launched in cooperation between the latter organizations and the World Health Organization (WHO), this may have to be reemphasized.
Nevertheless, this does not necessarily imply that the mechanisms, which these organizations have set up, are ineffective in dealing with IP filings. As the South Africa’s country profile at the WIPO reveals, in 2020, the country counted 1,457 IP filings for patents, 35,323 IP filings for trademarks and 2,779 IP filings for industrial designs among its own (i.e. resident and abroad), which would have made up for a GDP of US$680,04bn. That the latter amount of IP filings and potentially unique innovation marked a decline in comparison to 2017 and 2019, except when it came to trademarks, could for instance be connected with the global pandemic. Overall, patent applications by non-residents (6,146) far exceeded the scope of patent applications by residents (542) and those who resided abroad (915). Among the Patent Cooperation Treaty (PCT) applicants, DetNet South Africa, the University of Pretoria, Epiroc South Africa, the University of Johannesburg and the University of Cape Town were on top, while Sasol Limited dominated trademark applications under the Madrid System and Magdalena Henrietta Elizabetha Pieters was a top applicant with regard to the Hague International Design System. Whereas Africa, Latin America and the Caribbean and Oceania had a share of 3,2%, when it came to patents in force, their share for trademarks amounted to 7,7% in the global comparison with industrial designs of the latter regions and North America amounting to 7%.
Despite that South Africa ratified the TRIPS agreement on 23th February 2016, it has intensely criticized the latter alongside India in the context of the COVID-19 crisis and the so-called “‘vaccine nationalism’”. With the two countries having lobbied for “waiving off TRIPS to ensure equity, accessibility, and affordability of vaccines”, South Africa has raised awareness of the fact that international IP law has its own gaps, some of which have been especially visible due to the global pandemic, and somewhat constitute proof of the ‘Western-centric’ nature of the IP law as put forward through legal instruments such as the TRIPS agreement. Next to South Africa’s criticism about the access to vaccines, the country initiated its first WTO dispute in July 2022. As a statement from the end of July on the WTO’s website reveals, South Africa precisely critiqued “the import restrictions imposed by the EU on citrus fruit from [itself]”. With the EU having been outlined to have introduced much stricter phytosanitary requirements (i.e. requiring “25 days of cold treatment…before importation”) with an immediate and negative effect on interregional trade amid the export season, as well as shown a disregard for South Africa’s alternative approach to prevent citrus fruit from being contaminated with the false clothing moth (also Thaumatotibia leucotreta), this dispute also highlights the themes of ‘power’ and ‘discrimination’ in international trade.
The latter is to say, although this dispute is not directly related with IP protection, and with ‘Western-centrism’ per se, it might illustrate how more economically independent actors such as the EU, who also have more significant experience with WTO disputes than a country such as South Africa, are proceeding to push for certainly needed (phyto-)sanitary standards in interregional trade without weighing the immediate economic impacts on South Africa, who was argued to lose R654m by a commentator in the Business Insider ZA. The latter might at least somewhat account for a discriminatory practise considering the comparative economic well-being of the EU. Despite one could criticize South Africa’s accusation of the EU for violating §2.2 of the WTO Agreement on the Application of Sanitary and Phytosanitary Measures (SPS Agreement), because the EU very well grounded its import restriction on science-based facts after issuing a commodity risk assessment from the European Food Safety Authority (EFSA), South Africa might also have a point with emphasizing that a “23-day period for implementation of these new requirements” are not enough to prevent profound economic losses, especially since 25 days of cooling are required prior to exporting amid the high season. With ‘safeguard actions’ being unauthorized to target a particular country, this dispute may call for adequate compensation – with economic fairness and justice constituting concepts that might have to be reconceptualized as part of the TRIPS Agreement, international IP and trade law.
South Africa and Domestic IP Law
As highlighted in the Intellectual Property Policy of the Republic of South Africa Phase I, South Africa has made progress when it comes to the protection of IPR, but what it is still lacking is a comprehensive and regionally aligned IP policy. As part of its other efforts, such as the National Development Plan (NDP) and its broader mission to stimulate a new innovative productivity in South Africa’s future knowledge economy, IP has been described as “an important policy instrument” for many reasons beyond, however including creative expression and innovation. To specify, in relation to a wide range of objectives from technology transfers and R&D to industrial and economic growth and consumer protection etc., IP law has been regarded as a legal shield against exploitation, and misappropriation. With the South Africa’s Government putting an emphasis on connecting IP policy development with the goal to protect local content and knowledge, it may however be surprising that it has not yet joined the ARIPO and the OAPI.
As Hlomani argues, South Africa’s case might be a little bit different than that of other countries in the region. But why? One possible answer could be that South Africa has chosen to focus on IP “coordination in international forums, and the implementation of commitments undertaken in international agreements” and IP and public health in policy phase I and on “leverag[ing] the assistance of intergovernmental organizations of which the country is a member, such as WIPO, UNDP and UNCTAD” in policy phase II. This is actually so unique, because South Africa’s approach to IPR protection is a globally-oriented one with an emphasis on “international best practices in IP”. While South Africa has also expressed its intention to look towards a regionally-aligned IPR protection mechanism, it has not explicitly mentioned the aim to join the ARIPO nor the OAPI in their current constellation. Rather than making bold claims in this regard in the policy phase I report, it has expressly declared the relevance of the final establishment of the Pan African Intellectual Property Organization (PAIPO), which would be a suborgan of the AU and hence stand in alignment with the narrative and goals of the AfCFTA.
While various commentators have explored South Africa’s potential position as a “regional hegemon” in Africa and the AU, what could actually be interesting to observe is how the country has developed its IP policy in consultation with the United Nations Conference on Trade and Development (UNCTAD), the UN Development Program (UNDP), the WHO, WIPO and WTO. The latter does not only reemphasize its globally-oriented approach to IP, but could be an indicator that the establishment of the PAIPO will not fail in the future with the WHO’s involvement potentially having to do with the vaccine access issue. Among others, statues that relate to IPR protection in South Africa have so far included the: “Intellectual Property Rights from Publicly Financed Research and Development Act 51 of 2008 […; the] Patents Act 57 of 1978 [; the] Merchandise Marks Act 17 of 1941 [; the] Copyright Act 98 of 1978 [; the] Designs Act 195 of 1993 […;] Trade Marks Act 194 of 1993”. Aiming to protect both national and regional IP in the future, including based on a recommendation of the WHO to “stimulate the local production of pharmaceuticals”, it might be interesting to explore how the current domestic legislation could sync with a regionally-aligned and globally-oriented IP framework. Providing a brief overview of a few aspects of domestic IP law in South Africa below, it has to be said that there is no specific legislation in place to protect trade secrets.
- Patent Law
Among others, the Patents Act 57 of 1978, which was amended seven times between 1979 and 2002, holds that the duration of a patent is 20 years with the possibility of paying renewal fees (s 46.1) for an extension up to a maximum of 6 months. In accordance with the Patents Amendment Act 58 of 2002, it is now possible to receive a compensation in the case “any person […] has expended money, time or labour with a view to making, using, exercising [or] offering dispose of, disposing or importing the invention” (s 8c). Notably, an innovation may not directly be patentable, that is at the benefit of an applicant, when the government has an interest in the patent and shall claim it its own. As Mikhalien du Bois, Associate Professor at the Department of Mercantile Law at the University of South Africa (UNISA) points out in one of her recently published articles, “[t]he state or Minister cannot simply impose conditions; these need to be determined with reference to constitutional principles”. However, according to s 78 of the Patents Act 57 of 1978, this is actually possible and it is only or mainly conditions that “may be agreed upon”.
Following s 25(4a), patents cannot be granted when inventions are expected to bring about ‘immoral behaviour’, which is hardly defined by the Patents Act 57 of 1978. The latter may stand in contradiction with the founding provisions of South Africa’s Constitution, its democratic principles and civic rights, as well as the section on property in the Bill of Rights, which holds that “[p]roperty may be expropriated only in terms of law of general application: a. for a public purpose or in the public interest”. Whereas neither this section nor the Patents Act 57 of 1978 makes this explicit, there might be a need for the establishment of a legal dispute mechanism, through which state appropriation of IP can be democratically discussed beyond the issue of compensation. Generally, the Patents Act 57 of 1978 ensures that innovation is patentable as long as it is “novel, inventive, and capable of application in trade, industry or agriculture”. As s 25(7) stipulates, when applying for a patent, the current state of art with regard to a particular domain of innovation needs to be included in an application.
- Copyright Law
South Africa’s Copyright Act 98 of 1978 constitutes the basis for copyright protection in the country and was amended various times including in 2002, 2008 and 2013. In its essence, the original version of the Copyright Act 98 of 1978 held that copyright protection is applicable to literary (i.e. including translations), musical and artistic works (i.e. paintings, sculptures, architecture, other works of artistic craftsmanship) of original character. In line with s 1xxii, infringing on copyright law is to be understood as reproducing a literary, musical or artistic work, a substantial part of such a work or making a copy of it through a different medium (i.e. making a sound recording of a cinematographic film). Whereas the Copyright Act 98 of 1978 specified somewhat unclear that copyright licenses would be issued by “a society or other organization which has one of the objects the negotiation or granting of such licences”, the South African Government has emphasized that “[c]opyright is secured automatically when you create an original work that people can see or hear”. Only cinematographic films require further formalities.
As has been remarked last year, as the result of a hearing in the matter between BlindSA vs. Minister of Trade, Industry and Competition, the High Court of South Africa declared the Copyright Act of 98 of 1978 unconstitutional, because it violates the rights of people with disabilities and, more specifically, that of blind people who depend on sound recordings or other media to access the majority of creative and scientific works. Hence, while IP is a human right, as underlined in an article of The Anton Mostert Chair of Intellectual Property (CIP), this right cannot infringe on the rights of people with disabilities. As the International Commission of Jurists (icj) has emphasized, future IP and copyright law in South Africa will have to respect “international human rights law and standards, including as set out in the” following three conventions: the Convention on the Rights of People with Disabilities, the International Covenant on Economic, Social and Cultural Rights (ICESCR) and the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled. Based on the latter critique, it is actually no surprise that the IP Phase 1 report has highlighted the importance to align domestic IP law with South Africa’s constitution.
Even more recent than the latter critique, is the criticism at the most recent changes in South African copyright law. As a publication by the South African Government reveals, it consulted Google in 2022 to provide suggestions for amendments at the most up-to-date version Copyright Amendment Bill from 2017. Whereas Google agreed that the fair use s 12a is in line with international standards, it additionally remarked that this part of the Copyright Amendment Bill (B13-2017) should incorporate a “‘such as’ in the context of the fair use regime”. Next to this suggestion, Google insisted that, especially the SMME sector and the technology and creative sectors rely on certain exemptions to drive entrepreneurial technology and innovation. The remarks of commentators, who suggested that Google’s involvement in the amendment of South Africa’s copyright law may make the latter ‘weaker’, might thus be connected with the tech giant’s self-interest and its support for socio-economic growth over a stricter protection. However, Google has also emphasized that it supports that the Copyright Amendment Bill (B13-2017) will, in its final version, respect exemptions for persons with disabilities and not unnecessarily increase the scope of penalties by overly moralizing those who have infringed on copyright law.
- Trademark Law
In South Africa, trademark law is primarily intertwined with the Trade Marks Act 194 1993 and, as Smit & Van Wyk have pointed out, with the afore-mentioned Copyright Act 98 of 1978 and the Merchandise Marks Act 17 1941, whereby the latter was last amended in 2002 and supplemented by the Consumer Protection Act 68 of 2008, which classifies and creates rules around the utilization of (products that carry) trademarks. According to s 24(2b) latter act, “[a] person must [for instance] not – alter, deface, cover, remove or obscure a trade description or trade mark applied to any goods in a manner calculated to mislead consumers”. More generally, as the Trade Marks Act 194 1993 emphasizes, a registrable trademark is one that enables the distinguishment of the goods and services, which a particular person offers, and which does not disobey with the following rules and various more, as listed under s 10. A trademark may not: “[consist] exclusively of the shape, configuration or colour of goods where such shape, configuration or colour is necessary to obtain a specific technical result, or results from the nature of the goods themselves” s 10(5); “contain the coat of arms, seal or national flag of the Republic” s 10(8); “[be] identical or similar to a trade mark which is already registered and which is well-known in the Republic, if [its] use […] would be likely to take unfair advantage of , or be detrimental to, the distinctive character or the repute of the registered trade mark” s 10(17) etc. Notably, a trade mark primarily represents a particular person, where their name is mentioned, rather than a particular business, with s 12 specifying that permission needs to be obtained to change the name registered with a specific trade mark including if the formerly listed person is deceased. Following s 37(1-2) a trademark has a duration of 10 years and can be renewed timely within this period for another 10 years.
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